On Friday, September 9, 2011, members of IP Osgoode, participants of the , IP enthusiasts, along with friends and family, gathered at Osgoode Hall Law School to celebrate two additions to the intellectual property literary world: Intellectual Property Law: Copyrights, Patents, Trade-marks, 2nd ed. by and Copyright, Communication and Culture: Towards a Relational Theory of Law by .

Professor Poonam Puri, Associate Dean of Research, Graduate Studies and Institutional Relations, and member of IP Osgoode's Advisory Board, opened the celebration with words of congratulations to both authors. As part of the celebrations, Prof Craig and Prof Vaver gave a brief talk on themes surrounding their respective new works. Prof Giuseppina D’Agostino, Founder and Director of , introduced Prof Craig and Prof Vaver in turn, espousing each author’s respected work in the field of intellectual property law.

Prof Craig, a member of IP Osgoode, gave an explanation of her relational theory of communication and copyright. In essence, it is a movement away from the author (or creator) that creates in a vacuum, devoid of any outside influence. Instead, the relational theory posits that a creator necessarily draws upon past experiences and external influences – what she stated as been referred to as “culture.” Prof Craig suggested that moving towards a copyright system based on the ideas of communication and relationships would help dispel some of the tensions currently held between various parties, particularly, for example, creators and users. Prof Craig offered us an interpretation of the . The depiction of a water droplet that has fallen from a young bud causing a ripple effect in the pool of water below is meant to show the interrelatedness of all aspects of creation as shown in the relational theory where creations of new works both stem from and enter into the same and yet ever changing cultural landscape.

We then heard from Prof Vaver, a member of IP Osgoode and its Advisory Board, who spoke about his updated second edition of his survey text on intellectual property law. First he shared with us his initial surprise over the widespread reliance by the courts and intellectual property law practitioners on the first edition as they were not his intended audience. He went on to explain that he had students, general practitioners, and laymen in mind when framing and writing the first edition. He did not anticipate that those who would rely on his work would include the Supreme Court of Canada. The second edition, available for sale only since May 2011, has already been referenced in a Supreme Court of Canada decision. Prof Vaver concluded his talk by outlining how important intellectual property law has become for all other areas of the practise of law giving examples from constitutional, tort, and criminal law.

A brief questions and answer period followed, led by Hashem Ghazi, JD candidate at Osgoode Hall Law School, with discussion centering around the potential for Canada to be a leader in copyright reform. Mr. Ghazi’s review of Prof Vaver’s Intellectual Property Law: Copyrights, Patents, Trade-marks, 2nd ed. can be read as previously posted on IPilogue.

The afternoon celebration was enjoyed by all and we are sure to hear more about these two great additions to the intellectual property literary world in the future.

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On August 16, 2011, the released the decision of reinforcing that a process that can be done merely by a series of mental steps is not patentable subject matter under . This decision, if considered by the Canadian Federal Court of Appeal, could have negative implications for the Amazon.com case currently on appeal before it.

In Cybersource, the US Court of Appeal followed the US Supreme Court decision in Bilski v Kappos, holding that the “machine-or-transformation” test is not the sole test of the patentability of a process and that other tests, such as the mental steps test, may also be used in that determination. The “machine-or-transformation” test states that a process is patentable subject matter under s.101 if it is tied to a particular machine or if it transforms a particular item into another state or thing. The mental steps test, on the other hand, states that a process is not patentable subject matter under s.101 if it could be done merely by a series of mental steps.

In Re: Bilski, the full bench of the US Federal Court of Appeal affirmed the denial of a patent for a method of hedging risk management using the “machine-or-transformation” test. On appeal, the US Supreme Court affirmed the decision, but used the mental steps test in conjunction with the “machine-or-transformation” test to deny the patent. In the case of Cybersource, a patent was initially issued for the method of identifying online credit card fraud, but was held to be invalid by both the District Court and the US Court of Appeal using the mental steps test as in Bilski v Kappos. The Amazon.com case involves a process for allowing consumers to purchase items online with the click of one button. An analysis of the arguments in the Amazon.com appeal can be seen in past IPilogue blog post.

The patentability of the “one-click” process under the Canadian is at issue in the appeal. On the one hand, Amazon.com has a US patent for their “one-click” system (see ).  This fact could weigh in favour of granting a Canadian patent for the same invention. Also, the Canadian Federal Court the Commissioner of Patents’ decision to deny the patent in Canada. On the other hand, the invention must satisfy the rules of patentability of each new jurisdiction. In light of this, it is interesting to note that attempts to have the “one-click” patent granted by the (EPO) has been denied for a second time on appeal (see appeal decision .) The European patent was denied on the ground that the idea of eliminating the number of steps in order for a consumer to make an online purchase is not patentable subject matter.

While case law from another jurisdiction is not binding on a Canadian court, it can be used to influence a court's decision. Thus, despite the existence of the Amazon.com “one-click” US patent, the combination of the Bilski v Kappos decision, the Cybersource decision, and the denial of a “one-click” patent by the EPO may tip the scales towards denying a Canadian “one-click” patent.

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In response to the Federal Court’s decision in, the Canadian Intellectual Property Office has issued further to its patent examiners regarding subject-matter patentability.

At issue in , was the patentability of its “one click” method for online purchasing. The “one click” method allows customers to purchase items with the click of a single button. Originally, the Commissioner of Patents denied the patent application stating that the “one click” business method was not patentable subject matter under s.2 of the ; in other words, it was not an art, process, machine, manufacture or composition of matter. On appeal to the Federal Court, this determination was overturned. The case is currently being appealed to the Federal Court of Appeal. A more detailed description of the business method and history of the case can be found at .

On August 1, 2011, subsequent to the Federal Court’s decision, the (CIPO) issued new practice to patent examiners. The new practice guidelines replace any contrary guidelines currently in the (MOPOP) and are meant to further assist patent examiners in their examination of patent applications.  

First, the guidelines sum up general aspects of patent application examinations. For example, the guidelines state that two things must be identified when an application is examined, namely: 1) what the applicant is claiming as its monopoly, and 2) what the inventors actually invented. This basic tenet is further emphasized by stating that if either the claimed monopoly or the actual invention is not patentable then the application must fail.

The guidelines then expand upon the term "actual invention" to provide further assistance to patent examiners regarding patentable subject-matter.  Specifically, CIPO states that it considers the terms "actual invention" and "inventive concept" to be equivalent when the inventive concept is determined using the method described in the to the guidelines. Furthermore, the guidelines are very clear on the following point: a claim in not patentable unless its subject-matter relates directly to an inventive concept that is statutory (i.e. is an art, process, machine, manufacture or composition of matter), useful, new, unobvious, and fully supported by the description.

The method for determining the inventive concept described in the Appendix is admittedly undertaken in the same informed and purposive way as is done in the construction of the claim. Considerations that should be included in the identification of the inventive concept include, but are not limited to:

1)      What has been defined in the claim;

2)      What was disclosed by the inventors in their specification and drawings, particularly in respect of the features required for the successful operation of the invention;

3)      What, in light of the disclosure and the common general knowledge, appears to be the advance in the art; and

4)      Which features in particular are responsible for the result arising from that advance in the fields of the invention.

In addition, the Appendix explains that when a patent examiner relies on the inventive concept for his conclusions, the examiner’s statement of the inventive concept must be clearly indicated to the applicant. A word of caution to patent applicants: if in a response to the examiner’s report the applicant does not explicitly disagree with the inventive concept statement, then the applicant is deemed to have accepted the statement as being correct and no further opportunity will be given to object. It is also important to note that even if an applicant disagrees with the inventive concept statement, the examiner may still use the statement he believes to be correct in the rest of the analysis.

The guidelines came into effect immediately upon release and will remain in effect until further notice. In the meantime, patent applicants would do well to be aware of the new guidelines and ensure the compliance of their applications and procedures.

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In , a recent decision of the Federal Court, Justice Hughes clarifies that a Final Action by the patent examiner indeed means a final action. In other words, a Final Action is where all application objections are to be disposed of with no opportunity to hold objections in reserve for future consideration.

The decision was released July 12, 2011 and involved a judicial review of the decision of the Commissioner to uphold the rejection of the patent application by the examiner and the refusal to grant a patent, despite the execution of a Final Action in favour of the Applicants.

The patent application in question was for an invention called a “Protective Member for a Vehicle”, which was a protective coating that can be applied to the exterior of vehicles to prevent minor external damage (see ). The application was filed on October 5, 1995, at the Canadian Intellectual Property Office (). After several requisitions from the patent examiner and responses from the Applicants, the parties effectively arrived at a stalemate. On January 10, 2007, the Applicants filed a request for the patent examiner to issue a Final Action.

A , as defined in the (MOPOP), is a report of all the outstanding defects of a patent application to which the applicant is afforded a chance to respond. of the MOPOP outlines the Final Action Practice. Pursuant to s.30(4) of the and as set out in Chapter 21 of the MOPOP, a Final Action is a report made by the patent examiner that sets out all of the outstanding defects of the patent application in question. The patent examiner then requisitions from the applicant either amendments that would bring the application into compliance with the or the Patent Rules, as appropriate, or arguments as to why the application does comply. The applicant has six months within which to reply. If the patent examiner determines that the applicant’s response is unsatisfactory and thus rejects the patent application, the application is forwarded to the Patent Appeal Board (PAB) for review. The PAB then gives a recommendation to the Commissioner of Patents on whether to reject or accept the application.

On July 30, 2007, the patent examiner issued a Final Action rejecting patent application. Following the procedure set out in MOPOP, the application was then reviewed by the PAB; the PAB did not hold a hearing. The Commissioner accepted the PAB’s recommendation that the patent examiner’s rejection of the application was unjustified; but instead of allowing the application, as stipulated in the MOPOP procedures for Final Actions, the Commissioner sent the application back to the examiner “to address any outstanding defects which have been held in abeyance pending resolution of the new matter issue”.  The patent examiner then sent another requisition to the Applicants restating old objections and raising a new piece of prior art. In response, the Applicants sent a request asking the Commissioner to ignore the requisition and allow the application. The request was denied on December 4, 2009, and the Applicants filed for judicial review.

As Justice Hughes opines at paragraph 80 of the judicial review decision, a Final Action is meant to be just that, final. Justice Hughes also clarifies that there is no provision for the reservation of outstanding defects to be determined at a later date. All defects are to be disposed of in a Final Action.

The decision of the Commissioner of Patents of December 4, 2009, was set aside and the application was sent back to the patent examiner for re-determination of the request to ignore the most recent requisition and allow the application. Justice Hughes also opined that the most appropriate action the examiner could take would be to allow the application and let others, if they so choose, challenge its validity.

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A report entitled Trade Mark Incentives was released this month by the UK Intellectual Property Office (IPO). The report generally found trade mark activity to be positively correlated with better performance in the areas of productivity, employment, wages, and growth rates.

The provides information, , and services relating to all areas of intellectual property, including copyright, patents, and trade marks. A previously reported initiative of the IPO is the pilot project that was blogged about . The current study was commissioned by the IPO and undertaken by Christine Greenhalgh, Mark Rogers, Philipp Schautschick, and Vania Sena.

The executive summary of the report can be found and the full report can be found .

The purpose of the study was to investigate possible linkages between trade marking and performance. Specifically, the researchers were asked to do three things:

1. Document an overview of corporate trade marking activity in Britain;
2. Analyse the role of trade marks in the innovation process for firms and their impact on households; and
3. Explore possible links between trade marking and branding.

Data for the study was drawn from the Office for National Statistics (ONS) Annual Respondent Database (ARD2) for the years 2000-2006. In addition, data from OFLIP, a population database for UK firms, was used to supplement firm-level data. Data from the Community Innovation Survey (CIS4) were also included for the productivity analysis. Regression analyses were undertaken to establish possible correlations. A detailed explanation of the data and methodology used can be found in the .

Throughout their analysis, the researchers drew upon three viewpoints of trade marks in order to assist their interpretation of the statistical results, namely:

1. A trade mark acts as an information signal, informing consumers of source and potentially quality of products.
2. The registration of trade marks can act as a signal of innovation as it tends to coincide with the introduction of a new product to the market.
3. The registration of a product name is the starting point for the growth of a brand.

Bearing these views of trade marks in mind, the researchers investigated potential correlations between trade marking and performance in the following categories: 1) productivity, 2) employment, 3) wages, and 4) growth rates. The results in each category are as follows:

Productivity

• Based solely on the ARD2 sample of data, trade marking firms have a 21% higher productivity level.
• Adding the CIS4 data removed the statistically significant result, but the correlation was still positive.
• Increased intensity of trade marking (measured as the number of trade marks per employee) also indicated higher productivity, but more stringent statistical analyses reduced the strength of the correlation.

Employment

• Employment was found to be significantly higher in firms that engage in trade marking. The result remained the same when corrected for the size of firm based on sales.
• Firms that actively trade mark have a work force that is one fifth larger than firms that do not engage in trade marking.

Wages

• A small positive correlation was found between trade marking and increased average wages, however, researchers stated that the correlation could potentially be attributed to other factors such as longer hours worked or higher hourly rates of pay.

It was at this point in the study where researchers drew upon the above results to determine what, if any, impact trade marking had on households. Three benefits to households were identified. First, households benefit from an increase in purchasing power due to lower prices. Second, households receive better value for money as competition spurs an increase in product quality. A third benefit is an increase in product variety leading to a higher likelihood of satisfying the customer’s needs. All three benefits lead to higher customer satisfaction.

Growth Rates (Branding)

• A brand was defined as being a valuable, well known product or service.
• Building a brand involves many aspects, one of which is trade marking.
• Both in terms of employment growth and turnover growth, trade marking firms showed a 6% growth premium over non-trade marking firms.
• An unexpected negative correlation resulted when advertising was added to the regression analysis. Researchers speculated that the negative correlation could have resulted from lack of data (time frame too small) and/or that money spent on trade marks meant money not spent on advertising, and vice versa, creating a substitution effect with regards to resources.

In conclusion, the researchers found positive correlations between trade marking and performance in each category, but determined that the positive associations were not strong enough to establish causality. Researchers were still able to conclude that trade marking firms are different in important and valuable ways from other firms, supporting a conclusion that trade marking successfully fulfills its intended policy purpose of promoting innovation. While there was no mention of next steps or future research, I believe it would be beneficial to conduct further study in this area. As well, the limitations inherent within the datasets used for the current study could be starting point for gathering meaningful future data.

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On June 2, 2011, the published a patent application made by Apple for infrared technology that would allow the disablement of picture and video recordings taken by devices such as the iPhone.

The patent was originally filed in 2009 by the inventors: Victor Tiscareno, Kevin Johnson, and Cindy Lawrence. The patent application was reported on and a detailed description and explanation of the various potential functions of the proposed infrared technology can be found .

Primarily, the infrared technology could be used to prevent the unauthorized recording of video and/or the taking of pictures by the camera on a cell phone, portable media player, or tablet.  The system functions by enabling a device to detect an infrared signal that would be sent from a transmitter. The signal would carry instructions for the device to temporarily disable the camera as the content currently in view has not been authorized for recording. This type of disablement could also apply to museums or classified facilities where photos and recordings are not permitted.

Similarly, the infrared signal would enable institutions, such a museum, to send instructions through the signal to implant a watermark on any photos or video taken within the range of the signal. In this way, the institution can have their name appear across every photo taken of their facilities.

The signal could also provide information to tourists. While the technology may prevent picture-taking in a museum, it may also send information to be displayed on a person’s device. In this situation, a person would point their device at the object for which more information is desired and that person’s device would read the infrared signal and display the information about the object on the device. This type of application could exist anywhere a signal could be transmitted and could offer information about architecture, heritage buildings, subway stations, etc.

In addition, it was suggested that the infrared signal could be applied in a retail setting. Customers could use their devices to read the infrared signal being emitted from a tag on a piece of merchandise and receive information regarding size, price, inventory stock, etc.

As a practicality, devices that would include the infrared technology would also have operational controls so that the owner could determine when and for what purposes the device would read and display received information. The only exception being the temporary disablement of the camera function to prevent the violation of intellectual property rights; this feature would be permanently enabled.

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In the world of candy, �������’s distinct shade of orange tells the consumer that a tasty peanut butter and chocolate treat resides within the packaging. And while the colour orange may be a natural choice when trying to indicate peanut butter, Mars, in trying to enter that market using a similar colour, came too close for comfort.

It was on Tuesday, May 24, 2011, that had dropped its trademark infringement case against . In November of last year, The Hershey Co. filed a lawsuit against Mars, Inc. in Pennsylvania claiming that the packaging for Mars’  infringed the trademark �������’s holds in the orange colour of the packaging. Mars, Inc. counterclaimed in Virginia seeking a declaration that its packaging did not infringe the packaging trademark. By the following March, both parties had notified the courts that they were negotiating a .  A settlement has finally been reached between the two parties and on May 23, 2011, the parties informed the courts that they have agreed to

While the details of the settlement are not known, it would appear that it included a provision for a change to the packaging of the Dove peanut butter and chocolate bar. A completely orange version of the packaging can be seen in an article, . On the current Mars website one can now see the used on the packaging for the Dove peanut butter and chocolate bar.

Disputes regarding colour trademarks are now appearing in the news more frequently. Within the fashion industry, a dispute concerning on women’s high heeled shoes was recently reported between Christian Louboutin and Yves Saint Laurent (read also the feature post guest blog in the IPilogue, ). In the food industry, a trademark infringement case involving, inter alia, a specific colour of green on bread packaging was reported . And, the signature yellow colour of Whom-O’s Slip ’n Slide toy was the topic of a successful infringement case reported .

In terms of the Hershey-Mars dispute, while I think the Dove packaging was comprised of a shade of orange that was distinctive from Hershey’s and did not amount to infringement, I also think that it was important for Hershey to pursue an infringement action against Mars in an effort to maintain protection of its trademark rights.

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Toronto’s Caribana festival, currently operated by the (FMC), has been ordered to give the festival a different name as part of the Ontario Superior Court ruling that the Caribana Arts Group (CAG), the founder and original operator of the festival, owns the trade-mark rights to “Caribana.”

News of the court-ordered re-naming of Toronto’s Caribana festival was reported last week in several online articles that can be seen , , , and .  

The Caribana festival was started by the CAG in 1967. In 2006, after the City of Toronto denied funding to CAG due to inadequate financial statements, FMC began managing the festival as a result of an agreement made through the City of Toronto between CAG and FMC. Interestingly, at the time management changed hands, the festival name reportedly had to be changed to the “” because the Caribbean Cultural Committee (CCC, now the CAG) owned copyright in the name “Caribana.” While the Toronto Caribbean Carnival may have been the official name, the festival itself continued to be referred to as “Caribana” by the public and FMC as can be seen on the Caribana official website, .

Also, the agreement apparently did not include a licence to use the “Caribana” trade-mark. The CCC, and now the CAG, registered the name “Caribana” is association with wares and services including t-shirts and entertainment services. The registered trade-mark numbers are and . The latter, the registered mark for entertainment services, has been in place since March 25, 1977 and CAG has been diligent in renewing the registration as required. Efforts by CAG to come to an agreement with FMC regarding trade-mark usage have been unsuccessful, which led CAG to seek an injunction against FMC. On May 12th, the Ontario Superior Court ordered FMC to change the name of the festival and held CAG as the rightful owner of the trade-mark “Caribana.”

CAG continues to assert that it would welcome a licensing agreement with FMC for the use of the “Caribana” trade-mark. A licensing agreement would allow FMC the use of the trade-mark “Caribana” while allowing CAG to remain in ultimate control of the mark’s usage.  It could also include compensation for the usage.  FMC, however, appears to be moving ahead with the name change.

Spokespersons for the FMC commented in an article, , that the re-naming of the festival will improve participation in the festival as well as participant perceptions. At first glance, the commentary appears similar to that surrounding the Starbucks re-branding of its mermaid logo, as blogged about , however, in the Caribana case there is the added intention of moving away from negative connotations associated with the festival has experienced over the past few years. Movement such as this will likely take more than a mere name change to accomplish. As was also said in the article above, the public will still be aware that the new name refers to the Caribana Festival.

The new name of the festival, , was announced on Wednesday.

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The concept of collective rights of Indigenous Peoples with regards to intellectual property rights is just one of the topics under discussion at the of the Intergovernmental Committee on Intellectual Property and Genetics Resources, Traditional Knowledge and Folklore (IGC) being held at from May 9th-13th in Geneva, Switzerland.

While the agenda for the eighteenth session, posted , is provisional, the session will be addressing issues surrounding Traditional Cultural Expressions, Traditional Knowledge, and Genetic Resources with regards to intellectual property rights.

At the start of the week-long conference there will be a half-day panel of presentations chaired by a representative of the local or indigenous community; this has been done since 2005 at the mandate of the IGC. The theme of the panel of the eighteenth session is: “Indigenous Peoples’ Collective Rights and Intellectual Property.” The provisional agenda for the panel can be seen , and includes the topics of: “The Collective Rights of Indigenous Peoples: Their Conceptual Foundations and Implications”; and “The Intellectual Property Regime and Indigenous Peoples’ Rights: Future Challenges for Indigenous Peoples.”

Also, in preparation for discussion at the eighteenth session of the IGC, several glossary of terms have been made with regards to Intellectual Property and , , and . It has been suggested that the glossaries could be consolidated at some point in the future as there are overlaps of applicable terms.

At the seventeenth session of the IGC, it was decided that the Chair, Ambassador Philip Owade, would undertake an informal consultation with committee members regarding possible changes to the draft articles on traditional cultural expressions that would be addressed at the eighteenth session. The changes under consideration were about streamlining the draft articles, in particular, reducing the number of options and alternative proposals; policy questions were not considered. Members were required to register to participate in the consultation forum. The Chair created to instigate discussion. Only 5 of the 50 registered members commented and the Chair decided not to prepare an amended draft version of the articles as a result. The current draft version of the articles on traditional cultural expressions can be seen .

The eighteenth session will afford committee members another opportunity to address the draft articles, which may facilitate more participation. Also, the eighteenth session of the IGC should be a great success with further advances towards creative solutions to the issues surrounding intellectual property rights and traditional cultural expressions.

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